PAGE NO
DATE
77 Explain the confusion in the European
Commerichael
world
Answers
Answer:
The European Union ('EU') has attempted to establish a unitary regime to provide for a single filing system for trade mark registration through the inception of the Community Trade Mark Regulation ('CTMR')1, which due to recent amendments, has now been renamed the European Trade Mark Regulation ('EUTMR'). The term 'Community Trade Mark' ('CTM'), now 'European Trade Mark' ('EUTM'), under the said Regulation, includes any mark which consists of different words, shapes, designs and graphics which together can differentiate between goods or services of one enterprise from another. Moreover, the EUTMR provides owners of earlier trade mark rights the opportunity to oppose registration regarding any mark which is identical, similar or creates confusion with their earlier mark and the goods or services it assimilates with.
The opposition procedure under Article 8 of the EUTMR sets out relative grounds upon which oppositions can be based on, always initiated as inter partes proceedings, based on the likelihood of conflict with an earlier mark. Cases of oppositions may vary from absolute identity between goods, services or marks, in which case there is a presumption of 'likelihood of confusion', due to the marks being evidently identical, to a situation of mere similarity where the 'likelihood of confusion' is not presumed but is required to be proven. These cases are examined thoroughly by the Opposition Division of the European Union Intellectual Property Office (EUIPO), which was previously called the Office for Harmonization in the Internal Market (OHIM).
The notion of 'likelihood of confusion' is very important to any opposition procedure. The creation of public confusion is essential to the objection, along with a number of other important issues which need to be addressed when assessing similarity between goods, services or marks respectively.
The EUTMR does not specifically define the said notion, thus, the precise meaning of 'likelihood of confusion' has been the debate of many authors and cases for years. Today, the public as well as the EUIPO have settled on case law and follow the trend whereby 'likelihood of confusion' fundamentally refers to two particular situations in which:
"1. The public confuses the conflicting trade mark that is to say, mistakes the one for the other;
2. The public makes a connection between the conflicting trade marks and assumes that the goods/ services in question are from the same or economically-linked undertakings (likelihood of association)"2
Keeping this in mind, it is important to understand that to establish whether 'likelihood of confusion' actually exists, an overall assessment of several factors has to take place. Moreover, one can ask, to what extent should registrations be rejected or accepted upon proof of 'likelihood of confusion' and how far should one go when analysing the said notion? This is again a matter of interpretation of the Courts as well as legal authors.
The factors which contribute to the overall assessment of 'likelihood of confusion' should be assessed while keeping the following in mind:
Whether there is a threshold requirement that the goods or services and the signs be 'similar';
The factors to assess similarity of both goods or services and signs;
The nature of the relevant confusion and the overall assessment.
Further assessment of the above mentioned factors is a topic which can be discussed separately, however, for purposes of this piece, reference will be made to factors established by case law developed over the years, in particular through the case of Sabel vs Puma.3
The Sabel vs Puma case, decided back in 1997, has proved to be crucial in helping parties understand how 'likelihood of confusion' is examined, as it established a number of fundamental propositions which helped in understanding what 'identical marks' are, and how to assess, in a number of stages, the notion of 'likelihood of confusion'.
Generally, the assessment of 'likelihood of confusion' involves several factors, the most important of which being:
Similarity between goods or services.
Similarity between marks.
Dominant character of the marks.
Distinctiveness of the mark.
The relevant public.
Global Assessment.
The fact that no specific factors are precisely stated in the EUTMR, nor are any factors stated by the EUIPO, the EUIPO itself bases its opposition decisions on factors created through case law. This shows the importance of the above stated factors, particularly, the similarity between goods and services and the similarity between marks, which factors shall be assessed in this piece and subsequently in Part II of the same.